To: | Valiant Entertainment LLC (nzoubek@rlfllp.com) |
Subject: | U.S. Trademark Application Serial No. 88460031 - SHADOWMAN - N/A |
Sent: | July 11, 2019 02:31:34 PM |
Sent As: | ecom124@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88460031
Mark: SHADOWMAN
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Correspondence Address: |
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Applicant: Valiant Entertainment LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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PRIORITY ACTION
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 11, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On July 10, 2019, the examining attorney and Nancy Zoubek discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
Identification of Goods or Services
The identification of goods for International Class 9 contains wording that must be clarified because it is too broad and could include goods or services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In particular, the wording “Computer and video game programs; computer and video game software” is indefinite and too broad and must be clarified to specify whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is an entertainment service in International Class 41. See TMEP §1402.03(d).
Additionally, the wording “downloadable digital imagery, namely, cards, stickers and emojis” must be clarified by indicated the nature of the digital matter and the type of cards.
Further, the wording “USB drives” must be clarified by indicating whether the goods are blank or whether they are prerecorded. If prerecorded, the subject matter must be specified.
For example, applicant may adopt the following wording, if accurate:
International Class 9: {Specify whether downloadable or recorded} Computer and video game programs; {Specify whether downloadable or recorded} computer and video game software; downloadable computer and video game; downloadable electronic publications in the nature of comic books, comic strips, graphic novels, and books featuring narrative artwork or characters from narrative artwork, and stories in illustrated form; downloadable collectible trading cards; decorative magnets; downloadable digital image files, namely, electronic {specify type of cards, e.g., greeting, trading} cards, stickers and emojis; USB drives, namely, {specify “blank USB flash drives” or “prerecorded USB flash drives featuring [indicate subject matter]}
International Class 41: Entertainment services, namely, providing online computer and video games
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple-Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Advisory on Moving Goods and Services between Companion Applications
Section 1402.08 of the Trademark Manual of Examining Procedure sets forth the conditions under which, the applicant may amend to move items of goods or services from one application to another if an applicant has filed separate applications to register the same mark.
In particular, the application from which the item is to be moved must be filed on or before the filing date of the application to which it is to be moved. TMEP §1408.08.
The amendment will be permitted only if some of the goods/services in one application should be classified in a different class and the companion application includes that class. Id.
Moving goods/services between applications in this way may only be done if neither of the marks involved has been approved for publication in the Official Gazette. Id.
Goods/services can be moved between applications only in applications filed under §1 or §44 of the Trademark Act. In applications under §1, the applicant may request to move goods/services under a §1(b) basis to a companion application that includes goods/services in the same class, but which are under a §1(a) basis, or vice versa. Id.
The applicant must file a separate amendment for each application, that is, a request to delete specified goods/services in the application from which they are to be moved, specifying the serial number of the application to which they should be added, and an amendment in the application to which those goods/services are to be added, specifying the serial number of the application from which they are to be moved. Id. It is noted that the amendments may be accomplished with an Examiner’s Amendment if both of the subject applications are being handled by the same examining attorney.
For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c).
How to respond. Click to file a response to this nonfinal Office action.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/April A. Hesik/
Examining Attorney
Law Office 124
(571) 272-4735
april.hesik@uspto.gov
RESPONSE GUIDANCE